Friday, April 14, 2017

Third-party registration and use of the word "paper" in connection with digital writing devices led the Board to reverse a Section 2(d) refusal of the mark PAPER for software for writing on electronic devices with a stylus or finger. The USPTO had deemed the mark confusable with the registered mark shown below, for input devices for computers, including computer software for digital drawing and painting. In re FiftyThree, Inc., Serial No. 86180291 (April 12, 2017) [not precedential] (Opinion by Judge Bergsman).

The Goods: The Board concluded that both applicant's application software and registrant's electronic whiteboards and software identify digital notebooks that simulate paper notebooks, and so the goods are in part identical.

The Marks: Applicant submitted evidence of use of marks containing the word PAPER by three third parties for products related to digital notebooks. [Pen and Paper, PAPERLESS DRAW, and ePAPER]. In addition, applicant provided nine third-party, used-based registrations for such mark.

The third-party uses of marks consisting of the word “Paper,” in whole or in part, and the third-party registrations for marks consisting of the word “Paper” in connection with computer applications allowing for the substitution of digital data for writing or drawing on paper are sufficient to prove that the word “Paper” has been extensively adopted, registered and used as a trademark or part of a trademark for computer software or related goods and services of this type. As a result, a mark comprising, in whole or in part, the word “Paper” in connection with such goods or services should be given a restricted scope of protection.

In addition, applicant is the owner of a registration for the mark PAPER BY FIFTYTHREE for the same goods as in the application at issue. The evidence led the Board to conclude that:

● Registrant was satisfied to register its mark BAMBOO PAPER and design side-by-side with all the other PAPER marks by requesting an extension of protection under Section 66 of the Trademark Act, 15 U.S.C. § 1141f;

●The USPTO has been registering PAPER marks for computer software and related services for creating and utilizing digital data so long as there has been some difference between the marks as a whole or between the goods or services; and

● The number of registrations for various PAPER marks reflects a determination by the USPTO that various PAPER marks can be used and registered side-by-side without causing confusion, provided there are minimal differences between the marks and the goods or services.

Considering the marks in their entireties as to appearance, sound, connotation, and commercial impression, the Board concluded that BAMBOO is the prominent element in the cited mark, since "Paper" is a weak term for the involved goods.

The Board noted that registrant uses BAMBOO as a stand-alone mark on its stylus, and also in several BAMBOO-formative marks to identify its products. The Board concluded that "the marks are distinguishable because BAMBOO is the dominant part of Registrant’s mark and Applicant’s mark PAPER is very weak because it is highly suggestive, if not descriptive."

TTABlog comment: This is one of the infrequent, post-Juice Generation TTAB decisions in which the number of third-party uses (3) and registrations (9) were sufficient to affect the Section 2(d) outcome, even without proof of the manner and extent of use of the third-party marks. In other words, they had probative value on their face(s).

This is one of the first decisions I've seen where the TTAB actually determined the "lay of the land" around a particular popular term in a large, fast-growing industry and got it right with respect to what should or should not be considered confusingly similar. In other words, I think the Board finally made good use of the third-party registration evidence submitted to it by analyzing it and recognizing some patterns of coexistence. I also think the applicant's attorney cleverly submitted evidence of the registrant's use of its mark to show that BAMBOO was the dominant element in the registered mark.

Every time I cite third party registrations, they get blown off as not evidencing use. I see that the TTAB did make a similar point in a footnote, but nevertheless gave them weight. Why are these registrations different? Could it be because the EA cited them first?

Note that the examining attorney characterized PAPER as an "arbitrary term," whereas the Board, looking at the same evidence, concluded it was " highly suggestive, if not descriptive." I cannot for the life of me figure out how the examining attorney could believe PAPER was arbitrary.

On every record hawkwind has released the one name on every record is Dave Brock's nik turner's name appears on some Dave brock's has the rightful crown of hawkwind.nic turner is one of many musicians that have worked with Dave Brock's on hawkwind but the last time nick turner worked with hawkwind was over 30 years ago so what in delusional reality does nik turner think hawkwind belongs to him.its over 30 bloody years ago.nik turner what ever stupid reason you are putting a man in his 70,s through this hell i think you suck it up buttercup and get on with blowing your trumpet and move on. DAVE BROCK is HAWKWIND.understand that...